Essential techniques for litigating allegedly essential patents

Nokia Corp v Interdigital Technology Corp [2006] EWHC 802 (Pat) is a Patents Court decision of Mr Justice Pumfrey of Wednesday 12 April. The IPKat found it here on BAILII.

Interdigital was a research and patent licensing company in the mobile phone sector. Nokia, who made mobile phones, alleged that, during the standard-setting process for third-generation mobile telephony systems, Interdigital had flagged a number of its patents as being ‘essential’ for anyone operating to the proposed 3G standard. So far as Nokia was concerned, whether those patents were essential for the 3G standard was a relevant factor in fixing any royalty rate Nokia would have to pay: Nokia accordingly sought declarations that the importation and manufacture of mobile phones and equipment that complied with the 3G standard didn't infringe Interdigital's patents, which were not therefore essential for compliance with the 3G standard. Similar declarations were sought in respect of Interdigital's patents for 2G telephony.

Interdigital applied to have Nokia's application struck out on the basis that there was no finality in any of the declarations Nokia wanted, sinced it didn't follow, from the fact that the 3G standard did not require infringement of a given patent, that anyone importing or selling equipment would not be infringing that patent.

Right: second generation telephony - a thing of the past, but still worth litigating

Pumfrey J refused to strike out Nokia's application. Given the complexity and difficulty of this dispute as a whole, the court was not bound to accept unthinkingly everything said by a party in its statement of case, which might be obviously devoid of substance. Both with regard to the dispute over the 3G patents and the 2G patents, issues of fact had to be resolved before it could be seen whether Nokia's action for a declaration had any merit or not, so it would not be appropriate to strike it out now.

The IPKat remembers the old days when the main focus of patent litigation was on whether there had been an infringement or not. Now it seems that a large quantity of litigation has been pushed upstream: actions for declarations, motions to strike out and so on. This bears out how important it is to know the procedural ropes as well as the basic tests of infringement.

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  1. what is your thoughts on Pumfrey's statment that the IDC attorney wouldn't state that IDC's IPR under these patent's was essential?My take is that the spectrum changes so fast, what might be essential today isn't tomorow,so essentiality is a moot question, only a commercial one if you infringe?Nokia seems to want to negotiate non essential because they could thus theorhectically get a better 3G rate?

  2. Most companies have not licensed any of IDCCs 3G patents. In fact, Qualcomm with about 60 3G licensees charges the same for 3G WCDMA royalties as they do for 2G CDMA royalties. IDCC collects zero CDMA royalties because any essential patents they owned were sublicensed by Qualcomm. Qualcomm believes anyone using their 3G chips is cross-licensed for IDCC, Nokia and anyone elses 3G patents. Too bad for IDCC and their hype machine.


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